DETAILED ACTION
In Applicant’s Response filed 2/17/26, Applicant has amended claims 24, 31 and 32. Claims 1-23 and 35-56 have been cancelled. Currently, claims 24-34 are pending.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 24-34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watson (US 2012/0203155).
Regarding Claim 24, Watson discloses a moldable decorative splint material (the invention relates to moldable decorative material used to make splints – para [0001]; decorative elements such as beads 806 can be attached to the sheet 800 of splint material; FIG. 8, paragraph [0057]; Fig. 8) adapted to become sufficiently moldable (claim 1; step 604 in Fig. 6 – para [0051]) such that the decorative splint material may be molded into a splint configuration that conforms to an anatomical body part (step 606 in fig 6; the thermoplastic may remain pliable for several minutes at 45 degrees Celsius, and/or remain pliable at a lower temperature for a sufficient amount of time to permit shaping and applying the splint to the patient - paragraph [0051]) and to harden (step 608 in Fig. 6; para [0054]) such that the decorative splint material retains the splint configuration (the molded splint may be cooled so the thermoplastic hardens - paragraph [0054]; once hardened, the material retains the molded shape which conforms to the body part – para [0053-0054]), the moldable decorative splint material comprising: a base material (800; Fig. 8); a network of flexible connectors (804; Fig. 8); a plurality of supports (802; Fig. 8) attached to the network of flexible connectors (the monofilament lines 802 are interlaced with monofilament lines 804 to join the beads 806 to sheet 800 – para [0057]; the lines 804 are interpreted as being attached to the lines 802 when interlaced); and a plurality of discrete three-dimensional decorative elements (beads 806; Fig. 8), each three-dimensional decorative element held within a support of the plurality of supports (shown in Fig. 8; para [0057-0058]); wherein at least a portion of each of the plurality of discrete three-dimensional decorative elements is visible (Fig. 8).
Regarding Claim 25, Watson discloses the moldable decorative splint material as claimed (see rejection of claim 24) and also discloses that at least a portion of each of the plurality of discrete three-dimensional decorative elements extends out of the base material (as shown in Fig. 8, the top 806 of each bead 806 extends above sheet 800).
Regarding Claim 26, Watson discloses the moldable decorative splint material as claimed (see rejection of claim 24) and also discloses that the network of flexible connectors (804) includes one or more openings (openings between adjacent monofilament lines 804 when interlaced with lines 802; Fig 8). Watson does not, however, explicitly disclose that the openings are configured to allow the base material to seep through the one or more openings. However, with regard to this statement of intended use and other functional statements, they do not impose any structural limitations on the claims distinguishable over the device of Watson which is capable of being used as claimed if one so desires to do so. In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963). Furthermore, the law of anticipation does not require that the reference “teach” what the subject patent teaches, but rather it is only necessary that the claims under attack “read on” something in the reference. Kalman v. Kimberly Clark Corp., 218 USPQ 781 (CCPA 1983). Specifically, Watson discloses that in order to form the splint material to conform to an anatomical body part (step 606 in fig 6) the material must be heated so that it softens (step 604 in fig 6). Watson also discloses that the monofilament lines 802 are interlaced with monofilament lines 804 to join the beads 806 to sheet 800 (para [0057]). The interlaced structure inherently includes openings between adjacent rows of the lines 804. These openings provide a pathway through the interlaced structure and thus are interpreted as being capable of allowing the material of sheet 800 to seep through when the material of sheet 800 softens during the heating step taught by Watson. Thus, the openings in the network of flexible connectors on the device of Watson are interpreted as being capable of allowing the base material to seep through the openings if one desires to use the structure in this manner.
Regarding Claim 27, Watson discloses the moldable decorative splint material as claimed (see rejection of claim 24) and also discloses that each support of the plurality of
supports is cup shaped (portion of 802 surrounding 806 forms a cup shape as shown in Fig. 8).
Regarding Claim 28, Watson discloses the moldable decorative splint material as claimed (see rejection of claim 24) and also discloses that the discrete three-dimensional
decorative elements comprise beads ("bead 806"; paragraph [0057]; Fig. 8).
Regarding Claim 29, Watson discloses the moldable decorative splint material as claimed (see rejection of claim 24) and also discloses that the discrete three-dimensional
decorative elements (806) comprise rhinestones (the heat-moldable splint material includes decorative elements such as rhinestones – para [0024]).
Regarding Claim 30, Watson discloses the moldable decorative splint material as claimed (see rejection of claim 24) and also discloses that the network of flexible connectors
comprises a mesh (the monofilament lines 802 are interlaced with monofilament lines 804 to join the beads 806 to sheet 800 – para [0057]; the interlaced lines are interpreted as forming a mesh structure; Figs. 7, 8).
Regarding Claim 31, Watson discloses the moldable decorative splint material as claimed (see rejection of claim 24) and also discloses that the flexible connectors comprise cords (monofilament lines 804; Fig. 8).
Regarding Claim 32, Watson discloses the moldable decorative splint material as claimed (see rejection of claim 24) and also discloses that the flexible connectors comprise
strands (monofilament lines 804; Fig. 8).
Regarding Claim 33, Watson discloses the moldable decorative splint material as claimed (see rejection of claim 24) and also discloses that each of the cup shaped supports
includes a retaining edge (top left/right portions of 802 surrounding 806; Fig. 8) which overlaps an upper edge (top left/right 806; Fig. 8) of a decorative element (806; Fig. 8) to retain the decorative element within the support (as shown in fig 8).
Regarding Claim 34, Watson discloses the moldable decorative splint material as claimed (see rejection of claim 33) but does not explicitly disclose that the support is heat staked or ultrasonically formed to crimp the retaining edge over the upper edge of the decorative element. The claimed phrase “the support is heat staked or ultrasonically formed to crimp the retaining edge over the upper edge of the decorative element” is being treated as a product by process limitation; that is, that heat staking or ultrasonic forming methods are used to heat mold the material by crimping the retaining edge over the upper edge of the decorative element. As set forth in MPEP 2113, product by process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113. Thus, even though Watson is silent as to the process used to heat mold/form the support so that the retaining edge overlaps the upper edge of the decorative element, it appears that the product in Watson would be the same or similar as that claimed; especially since the device of Watson includes cup shaped supports that have a retaining edge (top left/right portions of 802 surrounding 806; Fig. 8) which overlaps an upper edge (top left/right 806; Fig. 8) of a decorative element (806; Fig. 8) to retain the decorative element within the support (as shown in fig 8) like the claimed invention and, furthermore, because both applicant's product and the prior art product is made of heat moldable thermoplastic material (see Watson para [0027]; see Applicant’s specification page 7 line 27 – page 8 line 13) and would thereby be capable of undergoing heat staking or ultrasonic forming processes to crimp the retaining edge of each support over an upper edge of a decorative element to arrive at the finished, molded structure.
Response to Amendments/Arguments
Applicant’s amendments and arguments filed 2/17/26 have been fully considered as follows:
Regarding the objections to the claims, Applicant’s amendments to claims 31-32 have been fully considered and are sufficient to overcome the objections which, accordingly, have been withdrawn.
Regarding the claim rejections under 35 USC 101, Applicant’s amendments to claim 24 have been fully considered and are sufficient to overcome the rejections which, accordingly, have been withdrawn.
Regarding the claim rejections under 35 USC 102, Applicant’s arguments on pages 5-7 of the Response have been fully considered but are not persuasive.
Specifically, the Office has noted Applicant’s arguments on page 6 that there is “no teaching or suggestion in Watson for a plurality of supports attached to the network of flexible connectors, as recited in independent claim 24” because “the monofilament lines 802, 804 cannot be construed to be equivalent to both the claimed network of flexible connectors and also the claimed plurality of supports that are attached to the network of flexible connectors”. The Office respectfully disagrees because the lines 802 and 804 are separate, independent elements where one element (line 804) has been interpreted as being equivalent to the claimed connectors while the other (line 802) has been interpreted as being equivalent to the claimed supports, and the two lines have been interpreted as being attached to each other when interlaced (see claim rejections above). Thus, the Office has not interpreted the lines 802 and 804 in Watson as being a single element but, instead, has interpreted them as separate elements that are each equivalent to either the claimed connectors or supports, but not both at the same time.
The Office has also noted Applicant’s arguments on page 6 that “there is no teaching or suggestion in Watson for the claimed plurality of supports that are attached to the network of flexible connectors and that hold the decorative elements”. The Office respectfully disagrees because as noted in the claim rejections above, the Office has interpreted Watson as disclosing supports (802) that are attached to connectors (804) when interlaced with one another where the decorative elements (beads 806) are held within a support (beads 806 are held by a line 802 as shown in fig 8).
The Office has also noted Applicant’s arguments on page 6 that the prior art differs from the claimed invention because the supports 210 and connectors 212 in the claimed invention are structures that are separate from one another. For at least the same reasons as provided above, the Office is not persuaded by these arguments because the lines 802 and 804 of Watson have been interpreted as being separate, independent structures.
Therefore, for at least these reasons, the Office maintains and reaffirms that the Watson reference reads on claim 24 as recited in the present application.
The Office has also noted Applicant’s arguments on page 7 regarding the dependent claims but for at least the same reasons as provided above, is not persuaded by these arguments.
Additionally, the Office has noted Applicant’s argument on page 7 that the prior art device of Watson differs from the structure recited in claims 27 and 33 because “the portion of the monofilament line 802 that is stitched through the bead through-hole 808 with an industrial sewing machine cannot be construed to be a cup-shaped structure with a retaining edge as recited in these dependent claims, and as clearly shown in Figure 4…”. The Office is not persuaded by this argument, however, because there is no requirement in claim 27 or 33 that the cup-shaped portion and/or retaining edge of the supports must be provided or located at the attachment point of the 3D decorative elements (which would be the portion of the lines in Watson that are stitched through the bead through-hole 808) – thus, the Office maintains that interpreting the portion of line 802 that surrounds element 806 as having a cup shape and retaining edge meets the limitations in claims 27 and 33 even if different portions of the line 802, such as the portion of the line 802 that passes through the bead, may not also have this shape. Therefore, for at least this reason, the Office maintains and reaffirms that the prior art of record reads on claims 27 and 33 as recited in the present application.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN CARREIRO whose telephone number is (571)270-7234. The examiner can normally be reached M-F 7:30am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachael Bredefeld can be reached at 571-270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CAITLIN A CARREIRO/Primary Examiner, Art Unit 3786
Prosecution Insights